Wednesday, February 27, 2008

A sub-theme in the patent troll tracker/Rick Frenkel matter was Frenkel's discussion of the Scott Harris meltdown; Legal Week noted:

Niro had a contentious relationship with the anonymous blogger since a Troll Tracker post criticised Niro last year. After Niro filed a patent suit for a client against Google, Frenkel was among the first to report that Scott Harris, a Fish & Richardson partner based in San Diego, was listed as the inventor on the patent while his firm was also representing Google. Harris resigned shortly after.

Recall in court papers ("paragraph 9") surrounding the Harris matter:

Mr. Harris has been involved with teaching patent law to attorneys and technologists. He has taught basic patent law for the Patent Resources Group and has presented a primer class on software patenting to more than 30 companies. He has been invited to present a class on patent cost reduction via outsourcing and teaches a one-hour class called “Patents for Kids” (a program designed to teach young people about intellectual property); both presentations take place throughout the country. Mr. Harris has been extensively quoted in national and local publications concerning issues involved with patent law and was named the top patent prosecuting attorney in the IP Law & Business “Patent Hall of Fame” in 2003.

Note separately Fish's response:

Fish & Richardson lacks sufficient information to form a belief as to the truth of the allegations contained in paragraph 9, and therefore denies them.

Separately, Patently-O had written in October 2007: For its part, Fish & Richardson allegedly claims title to the Harris patent – which was apparently invented while Harris was working at Fish. Thus, the Harris matter has an issue similar to that which appeared before the CAFC in DDB v. MLB. The priorart blog has a timeline. The Chicago IP Litigation bloggives some detail on the various motions filed in the Harris / Fish matter.

Harris signed an employment contract, but it does not contain any clause devoted specifically to personal patent activity.

Nonetheless, Fish alleges Harris stepped over the broader ethical boundaries of the contract, like devoting his full "legal and business time to Fish & Richardson."

But Harris says his bosses all knew about his outside interest in patents. [IPBiz: reminds one of what Barstow said of his Schlumberger bosses in the DDB v. MLB matter.]

"I had told various people over the years that I was an inventor, and that I was doing these things," he said, adding that partners had to have seen the many plaques displaying his patents on his office's wall. "And nobody seemed to see the problem at any point. They're trying to characterize it now that I never went through formal channels. Fish had no formal channels."

Fish alleges that Harris used firm resources, including secretarial and paralegal personnel, to file as many as 25 patents while working as an attorney there.

A 2005 meeting at Loyola (LA) law school on Cost-Effective Patents gives a bio for Harris:

Scott Harris is a principal of Fish & Richardson. He is a member of the bar in California, Washington, D.C. and Pennsylvania. Harris was named to the Patent Hall of Fame by I.P. Law & Business, and he has a B.S. and a J.D. from George Washington University.

-->As Merchant & Gould's Randall Hillson puts it: "An awful lot of IP is driven by inventors, but [IP strategy] is not an issue of whether something is a good invention. It's an issue of what's a good business investment."

(...)

Last July we sent out requests for nominations to 69 law firms. These firms had been named by Fortune 100 companies as primary prosecution firms in our survey, "Who Protects IP America," [July 2003]. Thirty firms submitted 44 nominations, and we selected ten Hall of Famers and five honorable mentions. We did not consider in-house lawyers or IP litigators who once did prosecution.[IPBiz notes that the "patent hall of fame", which seems to derive from the onearticle in 2003 is separately an interesting concept.]

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About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.